Dr. Rudolf J.F. Guertler v Antenna Engineering Australia Pty

[1985] APO 29

In the Matter of the Patents Act 1952 - and - In the Matter of Petty Patent 529212 in the Name of DR. RUDOLF J.F. GUERTLER - and - In the Matter of a Notice under Sub-Section 68B(3) by ANTENNA ENGINEERING AUSTRALIA PTY. LTD.

 

FINAL DECISION OF A SUPERVISING EXAMINER OF PATENTS:

This matter concerns petty patent number 529212 entitled "Controlled- Directivity Wide-Band High-Frequency Antenna". The application, number 88662/82 was lodged on 24 September, 1982 and the petty patent was sealed on 26 March, 1984. Notice under sub-section 68B(3) was lodged by A. Tatlock & Associates, Patent Attorneys, on 11 April, 1984 on behalf of Antenna Engineering Australia Pty. Ltd. ("the informant"). The sub-section 68B(3) notice was the subject of a hearing on 5 June, 1984 before Mr. P. Heathcote, Supervising Examiner of Patents, as delegate of the Commissioner of Patents.

According to the specification as accepted, the invention relates to an antenna for radio communication in the high frequency band, 2 to 30 MHz, for use where service over very different distances is required. The hearing officer decided that the claim was invalid on the grounds of obviousness and non-compliance with the requirements of section 40. The material part of the decision reads:

"I must pay heed to the patentee's contention, both orally and by declaration, that his invention lies in providing two grounding metal rods at each end of the antenna, to which the ends of the separate conductor (or earth wire) are conductively connected and to which the corners of tie wings of the antenna are respectively anchored and that this provides better mechanical stability with the rods at each end located on either side of the wing plane, and that this together with the fact that no other grounding is provided elsewhere along the separate conductor, provides an antenna with improved electrical characteristics. Nevertheless, these features are not defined in the claim albeit they have been described in the body of the specification, and this makes the claim bad, as it fails to comply with the requirements of section 40 of the Act However, I am satisfied that a claim drafted to include these features would not only comply with the requirements of section 40, but would also be not obvious in the light of the evidence presented by the informant. An antenna defined by such a claim would be defining more than the combined features of the two antennae shown in figs. 6 and 11 of exhibit DC5, and the additional features would provide an improved result electric- ally and mechanically, and this in my opinion takes it away from the realm of obviousness.

Under the circumstances, I feel that rather than reject the petty patent entirely, the patentee should be given an opportunity to amend the claim to encompass the features which he has argued as being the features of his invention. Accordingly, I direct the patentee to lodge amendments to amend the claim to my satisfaction within a period of 30 days from the date of this decision."

As directed, Dr. Guertler proposed amendments which were allowed. The petty patent claim is as follows (material deleted from the claim by the amendment referred to above is shown crossed out, material inserted by that amendment is underlined):

A high frequency antenna with adjustable directivity comprising two parts called wings, each wire being of substantially identical triangular form and consisting of a substantially vertical conductor connected at the top end to a downwards sloping conductor which is connected at the lower end to a substantially horizontal conductor both such wings being mounted, in conjunction with insulating means, in such a way that the vertical conductors form a transmission line of substantially constant characteristic impedance, furthermore a separate conductor being arranged parallel to the horizontal conductors of the wings kept apart from said conductors at such a constant distance to form a transmission line of a characteristic impedance approximately equal to one-half of the characteristic impedance of the previously mentioned vertical transmission line, each end of said additional horizontal conductor being conductively connected to one or more two grounding metal rods located on either side of the wing plane which may also serve the purpose of anchoring the corners of the wings and aligning each wing in any required direction, whereby the bottom ends of the vertical transmission line are connected to one pair of terminals and the nearby situated ends of the horizontal wing conductors provide another pair of antenna terminals, so that a high-frequency source may be connected to any pair of terminals leaving the other pair for connection to a terminating resistor, as described and as shown in Figure 3.

Following amendment of the specification the informants requested a hearing before the issuing of the final decision. At the hearing the informant was represented by Mr. A. Tatlock, Patent Attorney, of A. Tatlock & Associates, and Dr. Guertler appeared in person, assisted by Mr. Peter Hart, Senior Tutor in Electrical Engineering, Monash University. Mr. Tatlock's submissions at the hearing can be summarised as follows:

1. The term of the petty patent cannot be extended as the petty patent has now lapsed and extension of term may be granted only in respect of patents which are in force at the time of grant of the extension;

2. Part VIII of the Patents Act does not allow amendment of petty patent specifications in the course of section 68B proceedings, so the "purported amendment" of the claim to overcome the obviousness and section 40 objections was ineffective, and the claim remains invalid;

3. Even if the amendment of the claim is effective, that amendment does not meet the requirements of the direction of the previous hearing officer; and

4. In the light of further evidence produced at the hearing, even if the claim was amended as required by the previous hearing officer, that amended claim would be invalid as being obvious.

Extension of Term of an Expired Petty Patent

Mr. Tatlock submitted that the term of a petty patent could not be extended under sub-section 68B(5) once the initial 12 month term had expired. This submission was based on a comparison of the provisions in sub-sections 94(1), 95(9) and (10) and 98(4) on the one hand with the provisions of section 68A and sub-section 688(5) on the other hand. Sub-sections 94(1) and 95(9) and (10) relate to extensions of patents on the ground of inadequate remuneration or on the ground of war loss. Sub-section 94(1) is typical of the three sub- sections, and is as follows:

94(1) If the prescribed court is of opinion that the patentee of a standard patent has been inadequately remunerated by his patent, the court may -

(a) order the extension of the term of the patent subject to such restrictions, conditions and provisions (if any) as the court thinks fit, for a further term not exceeding 5 years, or, in exceptional cases, 10 years; or (

b) order the grant of a new standard patent for such term, not exceeding 5 years, or, in exceptional cases, 10 years, as the court thinks fit, and containing such restrictions, conditions and provisions (if any) as the court thinks fit.

The sub-section contains 2 paragraphs, paragraph (a) is utilised by the court to extend the term of a patent which has not yet expired at the time when the court makes its order, and paragraph (b) is utilised by the court to grant a new patent if the original patent has expired before the court makes its order. In contrast, the provisions relating to extension of the term of petty patents merely empower the Commissioner to "grant an extension of the term of the petty patent" (sub-section 68B(5)). Mr. Tatlock submitted that the absence of a provision in section 68B empowering the Commissioner to grant a new petty patent in lieu of the patent which has expired, when such a provision appears in comparable sections elsewhere in the Act, implies that the term of a petty patent may be extended only when that term has not already expired. Mr. Tatlock also referred to the sections allowing restoration of lapsed standard patents. Those sections include sub-section 98(4) which states:

98(4) Where a patent is restored under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by contract or otherwise to avail themselves, of the subject matter of the patent after the patent was notified in the Official Journal as having ceased an before the date of the first advertisement of the application (for restoration).

The sub-section protects persons who utilise a patented invention during a period when the patent is not effective. Mr. Tatlock submitted that the absence of any corresponding provision in section 68B to protect persons who utilise an invention the subject of a petty patent in the period between expiry of the initial 12 month tern and before any extension of term implies that extension of term of the expired petty patent is not contemplated by the Act.

I do not agree with these submissions. The wording of the relevant parts of the Act are as follows:

68A Subject to section 95 and to part XI, the term of a petty patent shall consist of -

(a) a period of 12 months commencing on the date of the sealing of the patent; and

(b) if an extension of the term of the patent is granted in accordance with section 68B - an additional period commencing on the day immediately following the expiration of the period mentioned in paragraph (a) and ending at the expiration of 6 years after the date of the patent.

68B(5) Subject to this section, if the Commissioner is not satisfied of the existence, in relation to the petty patent, of any of the grounds set out in paragraphs 100(l)(a), (b), (c), (d), (e), (f) and (g), the Commissioner shall grant an extension of the term of the petty patent.

The clear meaning of these provisions, when read in isolation from tie rest of the Patents Act, would allow "extension of the term" of a petty patent which has lapsed. When such an extension is granted, the operation of section 68A is such that the petty patent is to be treated as if it was never in the state of lapse. This is because that section provides that the petty patent shall have only one "term"; but that the duration of that "term" shall be either one "period" of 12 months running from the date of sealing, or two "periods", one of which runs for 12 months from the date of sealing and the second of which commenced immediately on the expiration of the first period and expires 6 years after the date of the petty patent. I do not think that this clear meaning should be cut down by implying limitations based on the style of legislative drafting adopted elsewhere in the Patents Act. It is a well established principle of statutory interpretation that an act is to be "read as a whole" and that when this is done the apparent scope of a section may be limited by other sections of the Act, on the basis that a change in language would not be adopted unless a change of meaning was intended. This principle was, for example, referred to by Higgins J. in the High Court in Commissioner of Taxes for Victoria v. Lennon (1921) 29 CLR 579 at 590, where the Judge said:

"There is sound sense in the statements contained in Maxwell 's Interpretation of Statutes, 6th ed. pp.557, 564, to the effect that, although it is always well ... not to change the language unless a change in meaning is intended, the presumption that arises from variations in language is of very slight force if the Words in themselves are sufficiently clear."

I think the words of section 68A and of sub-section 68B(5) are in themselves sufficiently clear to allow extension of the term of a lapsed petty patent, and that the presumption of statutory interpretation set out above is not, in this case, of sufficient force to displace that clear meaning.

Amendment of Petty Patent Specifications in the Course of Section 68B Proceedings

Mr. Tatlock's second submission was to the effect that Part VIII of the Patents Act does not allow amendment of petty patent specifications in the course of section 68B proceedings, so that the "purported amendment" of the claim to overcome obviousness and section 40 objections was ineffective, and the claim remains invalid.

Part VIII of the Patents Act contains sections 77 to 89. Sections 77 to 84 provide a mechanism whereby the Commissioner way, on request, amend a complete specification or petty patent specification. Sections 85 and 86 in Part VIII are as follows:

85. The preceding provisions of this Part do not apply, in the case of a request by a patentee for leave to amend his complete specification or petty patent specification, as the case may be, when, and so long as there is pending -

(a) an action for an infringement of the patent;

(b) a proceeding for revocation of the patent; or

(c) a proceeding in which -

(i) in the case of a standard patent - the validity of the patent or of a claim of the complete specification is disputed; or

(ii) in the case of a petty patent - the validity of the petty patent or of the claim of the petty patent specification is disputed, whether commenced before or after the lodging of the request for leave to amend.

86(1) In -

(a) an action for an infringement of a patent;

(b) a proceeding for revocation of a patent; or

(c) a proceeding in which

(i) the validity of a standard patent, or of a claim of the complete specification of a standard patent, is disputed; or

(ii) the validity of a petty patent or of the claim of a petty patent specification is disputed; the court or Judge may, at any time, by order made on the application of the patentee, subject to such terms (if any) as to costs, advertisements or otherwise as the court or Judge imposes, direct the amendment of the specification in the manner specified in the order.

Mr. Tatlock submitted that a proceeding under section 68B is, in the terms of section 85,

"a proceeding in which ... the validity of the petty patent or of the claim of the petty patent specification is disputed,"

so that section 85 operates to prevent a section 77 amendment when, and so long as, a section 68B proceeding is pending. I do not agree with the submission. Section 86 confers the power to amend on a court only when an action or proceeding is before the court, so that the terms "action" and proceeding" where they appear in section 86 refer only to actions and proceedings before a court. The terms "action" and "proceeding", where they appear in section 85, should be given a similarly restricted meaning. When this is done, proceedings before the Commissioner under section 68B in which the validity of the petty patent or of the claim of the petty patent specification is disputed, as they are not proceedings before a court, do not deprive the Commissioner of power to amend under sections 77 to 84.

Mr. Tatlock also submitted that the petty patent specification of an expired petty patent cannot be amended under section 77. The submission was to the effect that this section permits only "an applicant or patentee" to request amendment of a specification and, as in the present case the patent had expired when tie request for amendment was made, Dr. Guertler was not then a "patentee" and the request for amendment was of no effect. I do not agree with the submission as the expression "patentee" as used in the Patents Act is not limited in meaning to "the patentee of a patent which is in force"; the meaning of this expression also includes 'the patentee of an expired patent". (See the High Court decision in Sanofi v. Parke Davis Pty. Ltd. (1983) 1 IPR 383 at page 387 line 45 to page 388 line 3).

Defects in Claim

Mr. Tatlock's third and fourth submissions were to the effect that tie amendments made to the claim do not meet the requirements of the direction of the previous hearing officer and that, even if the claim was amended as required, that amended claim would be invalid as being obvious. These submissions indirectly raise issues relating to the effect of the interim decision. The status of an interim decision was considered by the Supreme Court of Victoria in The Broken Hill Pty. Co. Ltd. v. American Can Co. 1980 VR 143, per Fullagar J. The Court held that an "interim decision" of the Commissioner in opposition proceedings was "a decision" of the Commissioner appealable under section 60. The Court held that there was "no reason why the opposition proceedings should not be decided by several decisions provided each of them can be said in a real sense to decide 'the case' as presently constituted so far as the case is at the time susceptible of present decision." (page 147). This decision was approved by the High Court in R v. Smith; Ex Parte Mole Engineering Pty, Ltd. (1981) 55 ALJR 459; 35 ALR 119, in which the Court held that a decision of an Acting Deputy Commissioner in opposition proceedings, though styled an interim decision, was nevertheless a final decision on so much of the case as was then susceptible of decision. Moreover once that decision was made the Commissioner had no authority to rescind it and direct a rehearing of the matters to which it related. The ratio of these decisions would be equally applicable to proceedings under section 68B. Accordingly, if in his interim decision the earlier hearing officer decided some issue I cannot now reconsider that same issue.

In his interim decision the hearing officer stated that he was unsatisfied that a claim drafted to include these features (i.e. features he had referred to earlier in his decision) would not only comply with the requirements of section 40, but would also not be obvious in the light of the evidence presented by the informant". At the hearing before me Mr. Tatlock tendered further evidence which he contended would-prove that the claim as amended according to the direction of the hearing officer would still be obvious, and Dr. Guertler objected to the admission of this further evidence at this late stage of the proceedings. I understand the original hearing officer to have decided that the claim, if amended in a particular way, would not be bad for obviousness. That decision may have been arrived at without the benefit of the evidence now produced, but it is nevertheless a final decision on so much of the case as was then susceptible of decision. If the claim has in fact been amended as required by the hearing officer, I could not now reconsider the issue of whether the claim as so amended would be obvious, either in the light of or in ignorance of the further evidence. I accordingly decide not to admit the further evidence.

Finally I must consider Wiether the claim has been amended in accordance with the direction of the hearing officer. The relevant part of the decision is as follows:

"his invention lies in providing two grounding metal rods at each end of the antenna, to which the ends of the separate conductor (or earth wire) are conductively connected and to which the corners of the wings of the antenna are respectively anchored ... and this together with the fact that no other grounding is provided elsewhere along the separate conductor provides an antenna with improved electrical characteristics. Nevertheless, these features are not defined in the claim ... and this makes the claim bad, as it fails to comply with the requirements of section 40 of the Act ...

However, I am satisfied that a claim drafted to include these features would not only comply with the requirements of section 40, but would also be not obvious in the light of the evidence presented by the informant"

The hearing officer then directed the patentee to lodge amendments to amend the claim. The material part of the amended claim reads:

"a separate conductor being arranged parallel to the horizontal conductors of the wings being kept apart from said conductors ... to form a transmission line ... each end of said additional horizontal conductor being conductively connected to two grounding metal rods located on either side of the wing plane which also serve the purpose of anchoring the corners of tie wings ... "

On considering the entire claim it is clear that the "separate conductor" and the "said additional horizontal conductor' are one and the same conductor). The amended claim, as required by the hearing officer, quite clearly defines two grounding metal rods at each end of the antenna, to which the ends of the separate conductor are conductively connected and which anchor the corners of the wings. Mr. Tatlock submitted that the claim does not define, as required by the hearing officer, the limitation that no other grounding is provided along the separate conductor. What the claim does define is "... a separate conductor being arranged parallel to the horizontal conductors of the wings ... to form a transmission line'. That is, the claim defines the separate conductor as acting with the horizontal conductor on each wing to form an open- wire transmission line. If one of the conductors of this transmission line was to be grounded at any point other than at the corners of the wings, then it could not be described as a transmission line and so the claim already, by implication, defines the separate conductor as not being grounded at any point other than by grounding rods at the corners of the wings. I do not consider this interpretation of the claim to be inconsistent with the hearing officer's interpretation. The hearing officer referred to "two grounding metal rods at each end of the antenna" and "to which the corners of the wings of the antenna are respectively anchored' and then stated "that this together with the fact that no other grounding is provided elsewhere along the separate conductor provides an antenna with improved electrical characteristics. Nevertheless, these features are not defined in the claim The hearing officer seems to have treated the grounding rods and the anchoring of the corners of the wings to these as being features separate from the absence of grounding elsewhere along the conductor, and I take him as referring to the first two features when he observed that "these features are not defined in the claim".

I find that the specification has been amended as required hy the interim decision of 7 August, 1984 and I grant an extension of the term of the petty patent. The hearing officer for the interim decision reserved the question of costs for determination in the final decision. The interim decision was in favour of the informant, this decision is in favour of the patentee. I award the costs of these proceedings up to and including the date of advertisement of the amendments in favour of the informant and the costs after that date in favour of the patentee.

(A.J. EVANS)

Supervising Examiner of Patents

17 0CT 1985